Offc Action Outgoing

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH RESULTS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

INFORMALITIES

Applicant must address the following informalities:

National Citizenship Required

Applicant must specify his or her national citizenship for the record. 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. Applicant may submit the following statement to satisfy this requirement, if accurate:

“Applicant, Bruce Baar, is an individual citizen of the United States.”

Identification of Goods and Services Indefinite – Amendment Required

The wording “hygienic and beauty care products” in the identification of goods is indefinite and must be clarified because the term products is unacceptably broad and fails to identify, with any specificity, the nature of the goods. See TMEP §1402.01. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).

Also, the wording “sold by catalogue and online” in the identification of services is indefinite and must be clarified because the term sold is unacceptable. See TMEP §1402.01. Specifically, to be a service, an activity must be primarily for the benefit of someone other than the applicant. See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970). “Sales” or “selling” is not a service rendered for the benefit of others. See TMEP §§1301.01(a)(ii), 1402.11.

Therefore, applicant must delete “sold” and indicate with greater specificity the nature of the service, e.g., “online retail store services featuring cosmetics, hygienic and beauty care products,” or “mail order catalog services featuring Cosmetics, hygienic and beauty care products”.

Finally, applicant should note that the application included three classes. However, the identification of goods and services in the application is classified in only two classes. Therefore, the examining attorney’s recommended identification, detailed below, includes only two classes.

Applicant may adopt the following identification of goods and services, if accurate:

Class 03 –	“Cosmetics, hygienic and beauty care products, sold by catalogue and online, namely, [applicant to specify hygienic and beauty care products, i.e., feminine hygiene cleansing towelettes, non-medicated feminine hygiene wash, beauty creams, beauty care cosmetics, etc.].”

Class 35 –	“Catalog, namely, [applicant to specify type of catalog, i.e., electronic catalog services, mail order catalog services] featuring cosmetics, hygienic and beauty care products; online *retail store services featuring* cosmetics, hygienic and beauty care products.”

TMEP §1402.01.

Additions to Identification Not Permitted

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Intended Drawing Type Unclear – Clarification Required

The drawing shows the mark with some degree of stylization; thus, it is not clear whether applicant intends to depict the mark in standard characters or in a special form drawing format. TMEP §807.03(h).

A standard character drawing must show the applied-for mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font, style, size or color. 37 C.F.R. §2.52(a); TMEP §807.03(a). A special form drawing can include stylization of lettering/numbers, as well as design elements. 37 C.F.R. §2.52(b); TMEP §807.04(a).

If a standard character drawing was intended, then applicant must submit the following statement: “The mark consists of standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a); TMEP §807.03(a). If a special form drawing was intended, then applicant must state so for the record. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.

Mark Differs on Drawing and Specimen – Clarification Required

The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark the word BAAR; and the drawing shows the mark as the underlined wording BAAR plus symbol.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1). In addition, the drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.

Therefore, applicant must submit one of the following:

(1) A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark. See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. Amending the drawing to agree with the specimen would not be considered a material alteration of the mark in this case if applicant deletes the phrase plus symbol and removes the underline. It would be considered a material alteration to add the design element that appears on the specimen. Therefore, applicant cannot amend the drawing from the wording BAAR plus symbol to the term BAAR combined with a design element; or

(2) A substitute specimen showing use in commerce of the mark on the drawing, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §§807.12(a), 904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Advisory – Amendment of the Drawing May Result in Substantive Refusal

Please be advised that, if applicant elects to amend the drawing to delete the phrase plus symbol from the mark, registration will be refused pursuant to Section 2(e)(4) of the Trademark Act because the applied-for mark will be primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211.

Advisory – Applicant May Substitute the Filing Basis to Overcome this Requirement

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

RESPONDING TO THIS OFFICE ACTION

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved. The Office, however, cannot aid in the selection of an attorney. 37 C.F.R. §2.11. Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.

There is no required format or form for responding to an Office action; however, applicant must explicitly address each refusal and/or requirement raised in this Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). In addition, the proper signatory must personally sign or personally enter his/her electronic signature. See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

/Myriah A. Habeeb/

Myriah A. Habeeb

Trademark Examining Attorney

Law Office 105

Phone - (571) 272-8909

Fax - (571) 273-8909

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.